Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
VI. NEW GROUNDS OF REJECTION
A. 35 U.S.C. § 251
We reject reissue claims 5-15, 17-37, 39-59, 61-85, and 87-101 under
35 U.S.C. § 251, using our authority under 37 C.F.R. § 41.50(b).
Appellants’ reissue oath alleges error as follows:
One error is that patentee claimed less than they had a right to claim
as indicated in newly added claims 6 through 101. For example,
patentee is entitled but did not originally claim, a method and
apparatus by which a first computer system searches an electronic
book (created on a second computer system) for user-entered hand-
written search strings, wherein a portion of the electronic book is
displayed if it is associated with at least one of the user-entered hand-
written search strings.
Even if we adopt Appellants’ position with respect to recapture, we find no
such error. The prosecution of Application 08/801,251, its parent
applications, and the patent resulting from Application 08/801,251 are all
error free. Patentees claimed exactly what they had a right to claim in the
patent, no more, no less.
Appellants prosecution history shows that responsive to a restriction
requirement, Appellants elected to prosecute three separate applications
directed to three separate inventions. (See FF 10-13 and 16). Reissue
claims 5-15, 17-37, 39-59, 61-85, and 87-101 are directed to a different
invention than that of patent claims 1-4. (See FF 1-4). Appellants are
estopped from obtaining by reissue claims which, because of a requirement
for restriction in which they had acquiesced, they could not claim in their
patent. See In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA
- 53 -
Page: Previous 46 47 48 49 50 51 52 53 54 55 56 57 58 59 60 Next
Last modified: September 9, 2013